A G Design v. Trainman Lantern (Fed. Cir. 2008)

Description:AG sued Trainman for infringement of its hand-held RR Lantern patent. (US Pat. No. 7,118,245). The W.D. Washington district court issued a preliminary injunction after hearing an expert report that Trainmanâ€™s product was essentially identical to the patented device (except for one claim element).
On appeal the CAFC vacated the preliminary injunction â€” finding that the lower court had committed legal error in finding that the patentee had â€œa likelihood of success on the merits.â€
Legal Standard for Preliminary Relief: The CAFC nominally applies a four factor standard for determining whether preliminary relief is warranted. However, two factors are requisite and typically determinative: (a) Likelihood of success on the merits and (b) irreparable harm associated without preliminary relief.
Likelihood of Success: A likelihood of success on the merits requires some proof that the defendant â€œinfringes at least one valid and enforceable claimâ€ of the asserted patent. The likelihood of success may be rebutted by an accused infringer who raises a â€œsubstantial questionâ€ regarding the patentâ€™s validity, enforceability, or whether the accused device infringes the asserted claims. In a recent case, the a different panel (Judges Rader & Dyk) found the substantial question threshold met by evidence that â€œcast[s] doubt on the [claimâ€™s] validity.â€ Erico Int'l v. Vutec & Docâ€™s Marketing (Fed. Cir. 2008).
Lacking a Claim Element: Because the accused device here lacked a claim element (a â€˜plurality of portsâ€™ in the reflector), it could not literally infringe. Likewise, the CAFC found that the â€˜plurality of portsâ€™ limitation had been added during prosecution to narrow the claims â€” presumptively foreclosing infringement by equivalents. (Unless AG can show that the â€œrationale for the amendment is tangential to the equivalent in question.â€).
Validity Questions: The CAFC also found error in the district court opinion because the court did not specifically analyze whether a disclosed prototype included â€œall of the limitations of any of the asserted claims.â€ Instead, for the purposes of the PI, the district court had only noted that the prototype was â€œdifferentâ€ from the patent claims.
Expired Non-Compete: The parties here have a history including a non-compete agreement that expired during the appeal. Because it is now expired, the CAFC found that the non-compete could not serve as a basis for preliminary relief.